Ex Parte Moskowitz et alDownload PDFPatent Trial and Appeal BoardSep 30, 201612686834 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/686,834 01/13/2010 2352 7590 09/30/2016 OSTROLENK FABER LLP 1180 A VENUE OF THE AMERICAS NEW YORK, NY 10036-8403 FIRST NAMED INVENTOR Max MOSKOWITZ UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. P/4742-11 1354 EXAMINER MAI, TRIM ART UNIT PAPER NUMBER 3781 MAILDATE DELIVERY MODE 09/30/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAX MOSKOWITZ, DOV KATZ, and BEZALEL KATZ Appeal2014-008982 Application 12/686,834 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-008982 Application 12/686,834 STATEMENT OF THE CASE1,2 Max Moskowitz et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C. § 112, first paragraph, claims 1-11 and 15 as failing to comply with the written description requirement and to reject under 35 U.S.C. § 103(a): (1) claims 1- 7, 10, 11, and 15 as unpatentable over Cowan (US 4,852,705; iss. Aug. 1, 1989) and Herold (US 2010/0236886 Al; pub. Sept. 23, 2010); and (2) claims 1-7 and 15 as unpatentable over Clausen (US 6,769,701 Bl; iss. Aug. 3, 2004) and Herold. Claims 12-14 and 16-21 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Examiner rejected under 35 U.S.C. § 112, second paragraph, claims 5- 11 as being indefinite. However, the Examiner did not address this rejection in the Examiner's Answer nor did Appellants address it in their Appeal Brief or Reply Brief. 1A1ccordingly, this rejection is not before us for revie\~1, especially since the language identified by the Examiner as lacking antecedent basis, i.e., "said suitcase," is not present in any of claims 5-11. 2 The Examiner has withdrawn the following rejections: (1) claims 1-7 and 15 as unpatentable over Clausen (US 6,769,701 Bl; iss. Aug. 3, 2004) and Jones (US 2,581,417; iss. Jan.8, 1952); (2) claims 1-7 and 15 as unpatentable over Cowan (US 4,852,705; iss. Aug. 1, 1989) and Jones; (3) claims 1-11 as anticipated by Ross (US 2,663,048; iss. Dec. 22, 1953); and (4) claims 1--4 as anticipated by Egley (US 5,100,163; iss. Mar. 31, 1992). Ans. 3. We further note that the Examiner rejects claim 15 as unpatentable over Ross and Taskovic (US 4,545,592; iss. Oct. 8, 1985). See Final Act. 14. As we consider the Examiner's withdrawal of the rejection of claims 1-11 as anticipated by Ross to be applicable to all rejections based on Ross, and as Taskovic does not overcome the deficiencies of Ross in relation to independent clam 1, we consider the Examiner's withdrawal of the rejection of claims 1-11 as anticipated by Ross to be applicable to the rejection of claim 15. Accordingly, this rejection is not before us for review. 2 Appeal2014-008982 Application 12/686,834 CLAIMED SUBJECT MATTER The claimed subject matter relates to "the field of wheeled suitcases and, more particularly, to more easily rollable suitcases, namely, to wheeling frames for suitcases." Spec. para. 2, Fig. 13a. Claims 1 and 5 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A wheeling frame for wheeling a load which is rollable on its own load supporting wheels, the wheeling frame comprising: a frame defining a frame plane, the frame being removably securable to the load in such manner that the load is rollable and its weight is supported on said load supporting wheels; a wheeling leg assembly stowable in the frame and movable between a first position in the frame plane and a second position extending at an angle to the frame plane; at least one leaning wheel secured to the wheeling leg assembly, and the wheeling frame being structured so that it lacks its own load bearing wheels for supporting the load; and a fastening system structured to removably secure the wheeling frame to the load, whereby, when the wheeling frame is secured to the load, the load can be rolled such that its load is substantially carried by the supporting wheels while also leaning on the at least one leaning wheel of the wheeling leg assembly; and a spring biased mechanism configured and biased to urge the wheeling leg assembly toward the second position and yieldingly hold the wheeling leg assembly at the second position, the wheeling frame being so constructed that the at least one leaning wheel is only yieldingly held at the second position. 3 Appeal2014-008982 Application 12/686,834 Claims 1-11 and 15 ANALYSIS Written Description The Examiner rejects claims 1-11 and 15 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Final Act. 11. The Examiner states that the "specification fails to describe how the device is operational" (Id.) and offers several examples of alleged unclear connections and other structural irregularities that render the device inoperable. Id. at 11-12. In asserting this rejection, the Examiner relies not only on perceived inconsistencies in the Specification but also objectionable matter in the drawings. Id. at 2-10; see also Ans. 4--8, 12-14. Appellants respond that the originally filed Specification and drawings adequately disclose the invention in a manner sufficient to satisfy the written description requirement of 35 U.S.C. § 112, first paragraph. See Appeal Br. 9-15; Reply Br. 3---6. Near the conclusion of their remarks on this point, Appellants state the following: The net result of the foregoing is that the legs 582a and 582b (that support the wheels 588a, 588b) (Fig. 11 b) have been described in a manner teaching one of ordinary skill in the art how to bias these legs out of the frame. The specification also teaches how the angular position to which the legs will extend are limited to the "second position". Lastly, the specification/drawings teach how this angle, i.e., the "second position", can be adjusted. Reply Br. 5 (emphasis in original). To the extent they pertain to the claimed invention, we will now seek to ascertain whether the foregoing statements are true. Turning first to whether the originally filed Specification and drawings teach how to bias the legs 582a, 582b out of the frame 500 (as recited in claims 1 and 5), we first 4 Appeal2014-008982 Application 12/686,834 look to Figures I la, 111, and 1 lm and their accompanying written descriptions. As stated in paragraph 96 of the original Specification: As shown in Fig. I la, the leaning legs 582 are pivotable outside of the frame 501 by a pivoting mechanism which comprises the rotatable axis 592, which is coupled via a lost motion member 610 (to be described) to a rotatable pivot axis 593a, 593b to which the legs 582a, 582b are respectively attached. The axes 593a, 593b are coupled via a biasing spring 608 to the anchoring block 604 provided at each end of the frame 501. Paragraph 98 of the original Specification states, in part (with emphasis added): An extension 608a of the slidable block 604 protrudes from the framepiece 502a and is attached to the bias spring 608, which is disc-shaped. The disc-shaped bias spring 608 has on its post side the axis 593a which extends at its other end to the lost motion mechanism 610. The leg 582 is connected to the axis 593a. Paragraph 99 of the original Specification states (with emphasis added): With reference to Figs. 11land11 m, the spring biased disc 608 is rotatable upon the block extension 608a as shown in Fig. l lm. Internally, the spring bias disc 608 has a spiral, tightly wound spring leaf 595, one end of which (595b ), is attached to the outer peripheral surface of the spring bias 608 and the opposite end (598a), which is attached to the axis 608a, which extends within the interior space thereof Paragraph 100 of the original Specification states, in part (with emphasis added): Owing to spring leaf 595, the spring member 608 naturally biases the axis 593a to rotate counterclockwise in Fig. l ll, as shown by the arrow 609. Because the legs 582a, 582b are affixed at the axis 593a, the action of the bias spring 608 (at the two opposed side of the frame) constantly urge the legs to rotate out 5 Appeal2014-008982 Application 12/686,834 of the frame 501 . ... From the foregoing, it is clear, especially in view of the accompanying drawings, that the spring biased disc 608 rotates about the stationary extension axis 608a of block 604. One end of the leaf spring 595 within disc 608 is attached to the outer peripheral surface of the disc and the other end of the spring 595 is attached to axis 608a. In this way, stored energy in the spring urges the disc 608 and the axis 593a carried thereby to rotate in the counter clockwise direction. And, since the leg 582a is attached to the axis 593a, such leg will be biased out of the frame 500. Note that Figure 1 lb shows two spring biased discs 608, only one of which is numbered. It will be readily understood that paragraphs 96 and 98-100 of Appellants' Specification refer to the construction and operation of both spring biased discs 608 which urge their respective axes 593a, 593b to rotate and cause the attached legs 582a, 582b to be biased out of the frame 500. Next, we tum our attention to whether the original Specification and drawings also teach how the angular position to which the legs will extend is set to and yieldingly held at the "second position" (as recited in claims 1, 5, and 10). Paragraph 103 of the Specification states (with emphasis added): Referring now to Figs. 1 li, 1 lj and 1 lo, note that the lost motion mechanism 610 actually comprises a pair of cup-shaped discs 611 and 613, which are centrally mounted to the axis 592 on the exterior thereof. The disc 611 receives within the opposing cup-shaped disc 613 and has outer lips 611 a which prevent the disc inside 613 from being disengaged, while allowing its rotation therein about its own axis 593a, as shown in Fig. 1 lo. The smaller diameter interior disc 613 has a slot 617, extending over an angular range of about 5° to 55°. A pin 615, which is formed to slide inside the slot 617, projects from the interior of the opposing disc 611, as shown in Figs. 11 i and 11 o 6 Appeal2014-008982 Application 12/686,834 and as is diagrammatically illustrated in Fig. 1 lk. As the cup portion 613 is biased to rotate counterclockwise, it imparts that counterclockwise rotation bias to the opposing cup 611 via the pin 615, which engages the rightside wall of the slot 617. Thus, in a hypothetical orientation where the legs 582a, 582b extend at 90° to the plane of the wheeling frame 501, and are fixed in that position by the mechanism shown in Fig. 11, it is still possible to forcefully rotate the legs downward (clockwise) by a certain angular range which is determined by the angular range of the slot 617. The purpose thereof will become apparent further on. The foregoing makes clear, especially when read in light of Figures 1 li, 1 lj, and I lo, that the angular position to which the legs will extend from the frame is established by the arcuate length of the slot 617 of disc 613. That is, the legs will only extend as far as the slot 617 permits, thereby establishing or setting the "second position" of the legs. In addition, the angular range of the slot 617 also establishes the degree to which the legs 582a, 582b will yield from the second position when forced against the bias of spring biased discs 608. Finally, we must determine whether the original Specification and drawings provide adequate support for adjusting the "second position" angle with respect to the frame (as recited on claim 4). For that we tum to paragraph 101, which states (with emphasis added): Reverting back to Fig. 1 ln, the counterclockwise rotational force exerted by the spring bias disc 608 is naturally imparted to the lost motion mechanism 610 and, in tum, to the axis 592. However, the tendency to rotate counterclockwise is restrained, owing to the antirotation gear 612 being engaged with the angle position holder 594 (Fig. l lf). This serrated bar 594 with its own serrated teeth 594a engage with the corresponding teeth of the gear 6I2a which normally prevents rotation of the axis 592. To release the holding force, a user would grasp the handle 599 and lift the holder 594, allowing it to tip upward at the lefthand side, by pivoting around the pivot point 7 Appeal2014-008982 Application 12/686,834 596a shown in the block 596 (at the righthand side), against the holding force of a resilient spring 598 or resilient band which is anchored in the block 601. Lifting the holder 594 allows the legs 502a, 502b to pivot to a rotational position desired by the user, for the various purposes of the wheeling frame, as shall be described. Based the foregoing, the original Specification and its attendant drawings (Figures 1 ln and 1 lf) clearly disclose the notion of a ratcheted mechanism 612, 594 which cooperates to enable selective adjustment of the second position angle of the legs relative to the frame. One simply selects the desired angle by lifting the angle position holder 594 whereby it is released from engagement with the anti-rotation gear 612 whereupon the biasing force of the spring biased discs 608 forces the legs outward to the desired second position, and lowering of the holder 594 against the gear 612 locks the legs into the desired second position. In view of the foregoing, we are of the opinion that the originally filed Specification and drawings fully and clearly disclose a device which demonstrates that Appellants were in possession of the claimed subject matter at the time the application was filed. We, therefore, determine that the original disclosure satisfies the written description requirement of Section 112, first paragraph, and, further, that such written description provides an enabling disclosure of the claimed invention. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 1-11 and 15 as failing to comply with the written description requirement. 8 Appeal2014-008982 Application 12/686,834 Drawing Objection The Examiner also objected to Appellants' drawings under 37 CPR l.83(a) on the grounds that "[t]he drawings must show every feature of the invention specified in the claims, under 3 7 CPR 1 . 83 (b) on the grounds that the drawings "are incomplete," under 37 CPR l.84(h)(5) on the grounds of "modified forms of construction in the same view" and under (11 f), CPR 1. 84(p )( 5) on the grounds that the drawings "include character( s) not mentioned in the description." Final Act. 8; see also id. at 2-7, 9-11; see also Ans. 4---6. Ordinarily, an objection is reviewable by petition under 37 C.F .R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal Board. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. See MPEP § 608.04(c) (providing that "where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also"). To the extent that the objection to the drawings in the Final Rejection turns on the same issues as the rejection under 35 U.S.C. § 112, first paragraph, our decision with respect to the rejection is dispositive as to the corresponding objection. Obviousness over Cowan and Herold Claims 1-7, 10, 11, and 15 Independent claims 1 and 5 each recite a wheeling frame "for wheeling a load which is rollable on its own load supporting wheels," the wheeling frame "being structured so that it lacks its own load bearing wheels for supporting the load." App. Br. 45, 46, Claims App. 9 Appeal2014-008982 Application 12/686,834 The Examiner finds that with respect to the limitation that the wheeling frame lacks its own load bearing wheels, "the examiner submits that since the wheels 17 [of Cowan] are the claimed leaning wheels, there are no other wheels to be called as 'load bearing wheels'. Therefore, there is no 'load bearing wheels' in the device of Cowan." Ans. 9. Appellants contend: "The wheels 17 (Fig. 3) in Cowan are the load bearing wheels. They are not the 'leaning wheels' of the present invention." Reply Br. 6. Appellants' argument is persuasive. It is clear from inspection of Figures 3 and 4 of Cowan that the wheels 17 are the load bearing wheels of the wheeled case 11. There is no wheeling frame in Cowan having a wheeling leg assembly with leaning wheels or "being structured so that it lacks its own load bearing wheels for supporting the load" as recited in claims 1 and 5. Further, Herold fails to overcome this deficiency in Cowan. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 1-7, 10, 11 and 15 as unpatentable over Cowan and Herold. Obviousness over Clausen and Herold Claims 1-7 and 15 The Examiner finds that with respect to the limitation that the wheeling frame lacks its own load bearing wheels, "the examiner submits that since the wheels 44 [of Clausen] are the claimed leaning wheels, there are no other wheels to be called as 'load bearing wheels'. Therefore, there is no 'load bearing wheels" in the device of Clausen." Ans. 10-11. Appellants contend: "Clauson [sic], like Cowan, describes a luggage piece, not a wheeling frame. The Clauson [sic] luggage has its own 'load 10 Appeal2014-008982 Application 12/686,834 bearing wheels'" (Reply Br. 8) and "[t]his reference does not describe, even remotely, a wheeling frame which is attachable to a load, to allow the load to be oriented in a 'leaning position'" (Id.). Appellants' argument is persuasive. It is clear from inspection of Figure 1 of Clausen that the wheels 22 and 24 are the load bearing wheels of the wheeled case 20. Indeed, Clausen states: "In use, the bag 20 is tipped slightly towards the direction of travel (FIG. 3) such that the entire weight of the bag is borne by the wheel assemblies 22a and 24." Clausen, 5:22-24 (emphasis omitted). There is no wheeling frame in Cowan having a wheeling leg assembly with leaning wheels or "being structured so that it lacks its own load bearing wheels for supporting the load" as recited in claims 1 and 5. Further, Herold fails to overcome this deficiency in Cowan. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 1-7 and 15 as unpatentable over Clausen and Herold. DECISION We REVERSE the decision of the Examiner to reject claims 1-11 and 15. REVERSED 11 Copy with citationCopy as parenthetical citation